second seminar on bad faith tm filings · second seminar on bad faith trade mark filings ....
TRANSCRIPT
Second Seminar on Bad Faith TM Filings
Alexandra Poch, OHIM
TM5, Hong Kong, 13 May 2014
OUTLINE
Second seminar on bad faith trade mark filings
Bad faith as invalidity ground
Concept of bad faith
Where to find OHIM Guidelines on bad faith
Legal reform
01
02
03
04
• invalidity ground
• not ex officio
• time of filing
Second seminar on bad faith trade mark filings
Second seminar on bad faith trade mark filings
C-529/07 of 11 June 2009
• applicant knows or must know
• identical or confusingly similar third party sign for identical or similar product
• intention of applicant
• degree of legal protection of both signs
Second seminar on bad faith trade mark filings
C-320/12 of 27 June 2013
• bad faith = autonomous concept of EU law, uniform interpretation
• applicant’s knowledge or presumed knowledge of use by third party abroad is not, in itself, enough to find for bad faith
Second seminar on bad faith trade mark filings
Selection of other cases
• T-291/09 of 1 February 2012,
Pollo Tropical
• T-33/11 of 14 February 2012,
BIGAB/BIGA
• T-507/08 of 7 June 2011, 16PF
Second seminar on bad faith trade mark filings
T-136/11 of 13 December 2012
• artificial extension of grace period for non-use through repeat application can be bad faith
• however, different situation is protection, in accordance with normal business practice, of variations of signs, e. g. evolution of logo
Second seminar on bad faith trade mark filings
T-321/10 of 11 July 2013 GRUPPO SALINI/SALINI
• CTM declared invalid due to bad faith is invalid for all goods and services it was registered for, even those dissimilar to the goods and services of the other party/invalidity applicant
Second seminar on bad faith trade mark filings
Change of OHIM practice
Change of OHIM practice
Where to find the judgments
OHIM Case-law database https://oami.europa.eu/eSearchCLW/#advanced Database of the Court of Justice http://curia.europa.eu/
Second seminar on bad faith trade mark filings
Proposal COM (2013) 161 of 27 March 2013
Seminar on bad faith trade mark filings
Article 8(3)(b): “Upon opposition by the
proprietor of the trade mark, a trade
mark shall not be registered….where
the trade mark is liable to be confused
with an earlier trade mark protected
outside the Union, provided that, at the
date of the application, the earlier trade
mark was still in genuine use and the
applicant was acting in bad faith.”
Alicante
Thank You
(+ 34) 965 139 100 (switchboard)
(+ 34) 965 139 400 (e-business technical incidents)
(+ 34) 965 131 344 (main fax)
twitter/oamitweets
youtube/oamitubes
www.oami.europa.eu
CO
NTA
CT
US: